Why McCurry Won in 2009 but Lost in 2025 – The Trademark Battle with McDonald's Explained

Last week, it was reported in The Edge that McDonald’s had scored another legal victory in Malaysia — this time against McSpicy Curry House, the owner behind the proposed “Mc Curry” trademark.

Here’s what happened. On 5 May 2023, McSpicy Curry House filed an application to register the trademark “Mc Curry.” McDonald’s filed a trademark opposition to block the registration, arguing that the mark was confusingly similar to its well-known family of “Mc” trademarks.

However, the Malaysian Registrar of Trademarks dismissed McDonald’s opposition and allowed “Mc Curry” to proceed to registration. Dissatisfied with the decision, McDonald’s appealed to the High Court of Malaysia to set aside the Registrar’s ruling.

In its recent judgment, the Judicial Commissioner agreed with McDonald’s. The court held that the Registrar had erred in law by allowing the registration of “Mc Curry.” As a result, the Registrar’s decision was set aside, and the “Mc Curry” trademark application was refused registration.

How Is This Different from the 2009 McCurry Case?

Many have asked: Why did McCurry win against McDonald’s back in 2009, but lose in 2025? What really happened?

At first glance, it may seem like history repeated itself — but if we look closely, these are two entirely different cases, involving different parties, different causes of action, and different goods and services.

1. Different Parties

• 2025 case: The recent dispute involved a sole proprietorship — Mc Spicy Curry House, owned by B. Awtar Singh A/L Balwant Singh.

  
  

• 2009 case: The earlier dispute involved a company, McCurry Restaurant (KL) Sdn Bhd, which operated a restaurant business in Kuala Lumpur.

Although both used the name “McCurry,” they are separate legal entities, and their trademark situations are unrelated in law.

2. Different Causes of Action

• 2025 case - Trademark Opposition

This was a trademark registration dispute. McDonald’s filed a trademark opposition to prevent “Mc Curry” from being registered under Trademark Application No. 03005153. One of McDonald’s main arguments was that “Mc Curry” was confusingly and deceptively similar to the well-known McDonald’s family of trademarks (e.g., McChicken, McNuggets, McFlurry).

• 2009 case - Passing Off

That earlier dispute back in 2009 was a passing off action. McDonald’s sued McCurry Restaurant (KL) Sdn Bhd for allegedly misrepresenting its restaurant business as being connected to McDonald’s by using the prefix “Mc.” McDonald’s also sought damages for the alleged misuse.

3. Different Goods and Services

• 2025 case:

The “Mc Curry” trademark application covered Class 29 goods, such as:

“anchovy, preserved beans, butter, potato chips, coconut oil, corn oil, dates, edible bird’s nest, edible oils, edible fats, eggs, fish fillets, frozen fruits, jams, jellies, margarine, meat, preserved meat, milk, preserved mushrooms, pickles, peanut butter, pork, salted fish, soups, sesame oil, preserved for food soya bean, tofu, sunflower oil, tomato juice for cooking, tomato puree, tuna fish, vegetable salad, preserved vegetable, yogurt.”

The applicant argued that these products were intended for supermarkets and retail markets, not restaurants — a key distinction from the 2009 dispute.

• 2009 case:

In contrast, McCurry Restaurant (KL) Sdn Bhd operated a restaurant business, offering Indian and Malaysian cuisine under the “McCurry” name — a service-based offering rather than a product trademark.

Why Do the Two McCurry Cases Look the Same, But Ended So Differently?

You’re probably wondering — the dispute involves the same name, “McCurry,” so why were the legal actions and outcomes so different?

To understand that, let’s take a step back and revisit the basics of trademark law.

What Can You Do If Someone Copies Your Trademark (or Something Similar)?

If another business uses or tries to register a name that’s identical or confusingly similar to your trademark, you generally have three legal options:

1. Trademark Infringement – You can sue for infringement if your trademark is registered.

   
   

2. Passing Off – If your mark is not registered, you can still attempt to sue under common law for passing off, just like McDonald’s did in the 2009 McCurry case.

   
   

3. Trademark Opposition – If someone tries to register a similar mark, you can oppose the trademark registration before it becomes official — exactly what McDonald’s did in the 2025 McCurry case.

In short, both cases involve the “McCurry” name, but they arose under different legal grounds — one under passing off, the other under trademark opposition. And that distinction made all the difference in how the courts decided.

What Is “Passing Off”?

Passing off is a tort action under common law — it allows a business owner to take someone to court for misrepresenting their business as yours, even without a registered trademark, like McDonald’s did in 2009.

In other words, it protects your goodwill and reputation from being unfairly used by others.

To succeed in a passing off action, the Plaintiff must prove three key elements:

1. Goodwill or Reputation — The Plaintiff’s goods or services must have established goodwill or a recognizable reputation among the public, in respect of the subject business.

2. Misrepresentation — The Defendant must have misrepresented their goods or business as being connected or associated with the Plaintiff.

3. Damage — The Plaintiff must show that this misrepresentation caused actual or likely harm to its goodwill or business.

 The 2009 McCurry Case: Why McDonald’s Lost

In the 2009 McCurry case, McDonald’s sued McCurry Restaurant (KL) Sdn Bhd for passing off, arguing that McCurry’s use of the prefix “Mc” would cause confusion.

However, the Court of Appeal disagreed and found no passing off had occurred. The key reason:

No misrepresentation.

The court observed that the overall look and feel of both businesses were entirely different.

• McDonald’s served Western fast food under its iconic golden arches.

• McCurry served Indian and Malaysian cuisine in a typical local restaurant setting.

Because of these clear distinctions, reasonable consumers were unlikely to associate McCurry with McDonald’s — and McCurry ultimately won the case.

What Is a Trademark Opposition?

A Trademark Opposition is a formal proceeding where an opponent challenges or blocks the registration of a trademark before it becomes officially registered.

In Malaysia, this process takes place at the Intellectual Property Corporation of Malaysia (MyIPO), through the Registrar of Trademarks — not in court. This makes it very different from a passing off action, which must be filed as a lawsuit in the High Court.

When Can You File a Trademark Opposition?

The Malaysian Trademarks Act 2019 provides a 2-month opposition window, which begins right after a trademark application is accepted and published in the Trademarks Journal.

During this period, any party — for example, a brand owner who believes the new mark is confusingly similar to theirs — can file a Notice of Opposition to prevent the registration.

This is exactly what McDonald’s did in the 2025 McCurry case: it lodged a trademark opposition to block “Mc Curry” from being registered, arguing that it would likely confuse or deceive consumers due to the similarity with its famous “Mc” family of trademarks.

What Are the Grounds to Oppose a Trademark Registration?

In Malaysia, any person may file a trademark opposition — provided that the opposition is based on one or more valid legal grounds under Section 34 of the Malaysian Trademarks Act 2019.

These grounds fall broadly into two main categories:

1. Absolute Grounds for Refusal

These relate to the intrinsic characteristics of the trademark itself. A mark can be opposed on absolute grounds if it:

• Is not distinctive or lacks the ability to identify the origin of goods or services;

• Describes the goods or services (for example, using “Sweet Mango” as a trademark for mango desserts);

• Has become customary in the trade; or

• Is contrary to public policy or morality.

Essentially, absolute grounds focus on whether the mark is suitable — in itself — to be registered as a trademark.

2. Relative Grounds for Refusal

These deal with the relationship between the applicant’s mark and earlier marks owned by others. A mark can be opposed on relative grounds if it is:

• Confusingly or deceptively similar to an earlier mark, including well-known mark, which could mislead the public as to the source of goods or services;

• Applied for in bad faith to take advantage of another brand’s reputation.

It’s important to note that an “earlier mark” does not need to be registered. It can include an unregistered but well-known mark with significant reputation and goodwill.

These two categories — absolute grounds for refusal and relative grounds for refusal — form the backbone of most trademark oppositions in Malaysia.

For example, McDonald’s relied on relative grounds in its 2025 McCurry opposition, arguing that “Mc Curry” was confusingly similar to its established “Mc” family of trademarks and could deceive consumers into believing there was a connection.

What Can We Learn from the McCurry Cases?

Both McCurry cases — in 2009 and 2025 — may share the same name, but they carry very different lessons for entrepreneurs and brand owners.

Here are a few takeaways worth remembering 👇

1. Avoid Names That Resemble Well-Known Brands

   
   

Using a name that’s similar to a famous trademark is always risky. Even if your intention isn’t to copy, brand owners can still claim that your mark may confuse consumers. It’s always safer (and smarter) to create your own distinctive brand identity.

2. Winning Once Doesn’t Mean You’re Safe Forever

The 2009 McCurry case dealt with passing off, while the 2025 case involved trademark opposition. Just because a party wins under one legal ground doesn’t mean they’re immune from future challenges under another.

3. Don’t Copy Just Because Someone Else Got Away With It

Seeing others use a similar name without immediate consequence doesn’t make it legally safe. Each case turns on its own facts — so, don’t try this at home!

4. Different Laws, Different Facts, Different Results

Legal outcomes depend heavily on the specific facts, legal grounds, and evidence involved. What worked in one case might fail in another, even if the names or brands sound identical.

In short: protect your brand early, choose a name you can truly own, and when in doubt — get professional advice before spending big on marketing or packaging.

If you’re planning to build or expand your brand, make sure your trademark is properly protected from the start.

Talk to our team to conduct a trademark search, opposition assessment, or registration strategy — before someone else registers your name.

Written by,

Lawrence Tan  

Registered Trademark, Patent and Design Agent

LL.B (HONS), CLP

Advocate & Solicitor

Disclaimer

This article is for general reference only and does not constitute legal advice. The information is sourced from the internet and third parties, and while efforts are made to ensure accuracy, no guarantee is given as to its completeness or reliability.